`571.272.7822
`
`
`
`
`
`Paper No. 15
`Entered: May 11, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC. and AT&T SERVICES, INC.,
`Petitioners,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01814
`Case IPR2017-01237
`Patent 8,914,840 B21
`_______________
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`ORDER
`
`Granting-in-part Joint Motion to Terminate
`37 C.F.R. §42.72
`and
`
`Granting Request to Treat Settlement Documents
`As Business Confidential Information
`37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`1 Case IPR2017-01237 has been joined to Case IPR2016-01814
`
`
`
`IPR2016-01814
`IPR2017-01237
`Patent 8,914,840 B2
`
`
`I. INTRODUCTION
`
`On May 1, 2017, Netflix, Inc. (“Netflix”) and Convergent Media
`Solutions, Inc. (“CMS”) jointly filed a motion to terminate IPR2016-01814
`(Paper 12, “Mot.”), and a request to treat settlement documents as Business
`Confidential Information (Paper 13, “Req.”). On May 9, 2017, we joined
`IPR2017-01237 to IPR2016-01814. See Paper 14, 29. For the reasons
`discussed below, the parties’ joint motion to terminate IPR2016-01814 is
`granted-in-part as to Netflix and denied-in-part as to CMS, and the parties’
`joint request to treat settlement documents as business confidential
`information is granted.
`
`II. DISCUSSION
`
`The parties’ joint motion to terminate requests termination of
`IPR2016-01814 because the parties have settled their dispute regarding U.S.
`Patent No. 8,914,840 B2 (“the ’840 patent”) in this proceeding and in
`Convergent Media Solutions, LLC v. Netflix, Inc., No. 3:15-cv-02160 (N.D.
`Tex), the related District Court litigation. Mot., 3–5. The parties filed a true
`copy of their Settlement Agreement as an exhibit to this proceeding, and
`aver that the Settlement Agreement they filed constitutes the entire
`understanding and agreement between the parties. Id.; see also Ex. 2001.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” The
`
`2
`
`
`
`
`
`IPR2016-01814
`IPR2017-01237
`Patent 8,914,840 B2
`
`requirement for terminating this proceeding with respect to Netflix,
`therefore, is met.
`Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes
`review, the Office may terminate the review or proceed to a final written
`decision under section 318(a).” Due to the joinder of this proceeding and
`IPR2017-01237, AT&T Services, Inc. remains a petitioner in this
`proceeding after the termination of Netflix. Therefore, it is inappropriate to
`terminate CMS from this proceeding.
`
`III. ORDER
`
`
`It is hereby:
`
`ORDERED that the Joint Motion to Terminate Proceeding is granted-
`in-part;
`FURTHER ORDERED that this inter partes review is terminated as
`to Netflix, Inc., but is not terminated as to Convergent Media Solutions,
`LLC;
`FURTHER ORDERED that the Joint Motion to Treat Settlement
`Agreement as Business Confidential Information is granted; and
`FURTHER ORDERED that Exhibit 2001 (“Settlement and License
`Agreement”) be maintained as business confidential information and kept
`separate from the files of U.S. Patent No. 8,914,840 B2.2
`
`
`
`
`
`2 The Board designated the status of Exhibit 2001 as “Board only” prior to
`entering the decision to institute trial in IPR2017-01237 and granting the
`motion to join that case to IPR2016-01814.
`
`3
`
`
`
`
`
`IPR2016-01814
`IPR2017-01237
`Patent 8,914,840 B2
`
`For PETITIONERS:
`Chun Ng
`Patrick McKeever
`Vinay Sathe
`Miguel Bombach
`Kevin Kantharia
`Matthew C. Bernstein
`cng@perkinscoie.com
`pmckeever@perkinscoie.com
`vsathe@perkinscoie.com
`mbombach@perkinscoie.com
`kkantharia@perkinscoie.com
`mbernstein@perkinscoie.com
`
`Kurt Pankratz
`Brian Johnston
`Roger Flughum
`Eliot Williams
`kurt.pankratz@bakerbotts.com
`brian.johnston@bakerbotts.com
`roger.fulghum@bakerbotts.com
`eliot.williams@bakerbotts.com
`
`
`
`For PATENT OWNER:
`Matthew Juren
`Barry Bumgardner
`matthew@nelbum.com
`barry@nelbum.com
`
`
`
`4
`
`
`
`
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